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trademark

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									Trademark Issues in Current
      Negotiations
   Prof. Christine Haight Farley
       American University
• Trademark provisions in FTAs don’t mirror
  existing International standards or US law



• How FTA trademark provisions are TRIPS
  Plus is not immediately obvious
•   Well-known marks
•   Domain names
•   Geographical Indications
•   Non-traditional Marks
Paris Convention, Article 6bis:

(1) The countries of the Union undertake, ex officio if their
legislation so permits, or at the request of an interested party, to
refuse or to cancel the registration, and to prohibit the use, of a
trademark which constitutes a reproduction, an imitation, or a
translation, liable to create confusion, of a mark considered by the
competent authority of the country of registration or use to be well
known in that country as being already the mark of a person
entitled to the benefits of this Convention and used for identical or
similar goods. These provisions shall also apply when the
essential part of the mark constitutes a reproduction of any such
well-known mark or an imitation liable to create confusion
therewith.
TRIPS, Article 16:

2.  Article 6bis of the Paris Convention (1967) shall apply, mutatis
  mutandis, to services. In determining whether a trademark is well-
  known, Members shall take account of the knowledge of the
  trademark in the relevant sector of the public, including knowledge in
  the Member concerned which has been obtained as a result of the
  promotion of the trademark.
3. Article 6bis of the Paris Convention (1967) shall apply, mutatis
  mutandis, to goods or services which are not similar to those in
  respect of which a trademark is registered, provided that use of that
  trademark in relation to those goods or services would indicate a
  connection between those goods or services and the owner of the
  registered trademark and provided that the interests of the owner of
  the registered trademark are likely to be damaged by such use.”
The Federal Trademark Dilution
         Act (FTDA)
the owner of a famous mark shall be
entitled, subject to principles of equity . . . ,
to an injunction against another person’s
commercial use in commerce of a mark or
trade name, if such use begins after the
mark has become famous and causes
dilution of the distinctive quality of the
mark.
        15 U.S.C. § 1127
Dilution is …the lessening of the capacity
of a famous mark to identify and
distinguish goods or services, regardless
of the presence or absence of []
competition between the owner of the
famous mark and other parties, or [] the
likelihood of confusion, mistake, or
deception.
GIs =TMs
Article 2: Trademarks, Including Geographical Indications
2. Each Party shall provide that trademarks shall include certification marks.
    Each Party shall also provide that geographical indications be eligible for
    protection as trademarks.[1]
4. Each Party shall provide that the owner of a registered trademark shall have
    the exclusive right to prevent all third parties not having the owner’s consent
    from using in the course of trade identical or similar signs, including
    geographical indications, for goods or services that are related to those
    goods or services in respect of which the owner's trademark is registered,
    where such use would result in a likelihood of confusion.
13. Each Party shall provide that grounds for refusing protection or recognition
    of a geographical indication include the following:
(a)       the geographical indication is likely to cause confusion with a
    trademark that is the subject of good-faith pending application or
    registration; and
(b)       the geographical indication is likely to cause confusion with a pre-
    existing trademark, the rights to which have been acquired through use in
    good faith in the territory of the Party.
[1] Geographical indications means indications that identify a good as
    originating in the territory of a Party, or a region or locality in that territory,
    where a given quality, reputation, or other characteristic of the good is
    essentially attributable to its geographical origin. Any sign or combination
    of signs (such as words - including geographical and personal names, as
    well as letters, numerals, figurative elements and colors, including single
    colors), in any form whatsoever, shall be eligible to be a geographical
    indication. The term “originating” in this chapter does not have the meaning
    ascribed to that term in Article __._ (Definitions).
     Non-traditional Marks

“Neither Party shall require, as a condition
of registration, that signs be visually
perceptible, nor may a Party deny
registration of a trademark solely on the
grounds that the sign of which it is
composed is a sound or a scent.”
         Domain Names
“In order to address the problem of
trademark cyber-piracy, each Party shall
require that the management of its
country-code top-level domain (ccTLD)
provide an appropriate procedure for the
settlement of disputes, based on the
principles established in the Uniform
Domain-Name Dispute-Resolution Policy.”
  Inter-American
Convention of 1929?
     Thank You


cfarley@wcl.american.edu

								
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